USPTO Patents Application 09870801

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LEKER & VAN NEST, LLP
OHN W. KEKER - #49092
[ENRY C. BUNSOW - #60707
ON B. STREETER - #101970
4ICHAEL H. PAGE - #154913
^AGESH K. TANGRI - #159477
10 Sansome Street
lan Francisco, CA 941 1 1 - 1 704
'elephone: (415)391-5400
acsimile: (415)397-7188

TNNEGAN, HENDERSON, FARABOW,
JARRETT & DUNNER, LLP
CHRISTOPHER P. ISAAC
300 1 Street, N.W.
Washington, D.C. 20005-3314
'elephone: (202) 408-4000
acsimile: (202) 408-4400

Utomeys for Plaintiff

MTERTRUST TECHNOLOGIES CORPORATION

FILED

JUN 2 6 2001

RICHARD W. WIEKING

CLERK, U.S. DISTRICT COURT,
NORTHERN DISTRICT OF CALIFORNIA

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

NTERTRUST TECHNOLOGIES
CORPORATION,
Delaware corporation,

Plaintiff,

flCROSOFT CORPORATION, a
Vashington corporation,

Defendant.

Case No. C 01 1640 JL

FIRST AMENDED COMPLAINT FOR
INFRINGEMENT OF U.S. PATENT NOS.
6,185,683 Bl AND 6,253,193 Bl

DEMAND FOR JURY TRIAL

Plaintiff INTERTRUST TECHNOLOGIES CORPORATION (hereafter "InterTrust") •
lereby complains of Defendant MICROSOFT CORPORATION (hereafter "Microsoft"), and
alleges as follows:

FIRST AMENDED COMPLAINT FOR INFRINGEMENT OF U.S. PATENT NOS. 6,185,683 Bl & 6,253,193 Bl

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JURISDICTION AND VENUE

1 . This action for patent infringement arises under the patent laws of the United States,
Title 35, United States Code, more particularly 35 U.S.C. §§ 271 and 281.

2. This Court has subject matter jurisdiction under 28 U.S.C. §§1331 and 1338(a).

3. Venue is proper in this judicial district under 28 U.S.C. §§ 1391(c) and 1400(b).

THE PARTIES

4. Plaintiff InterTrust is a Delaware corporation with its principal place of business

8 || at 4750 Patrick Henry Drive, Santa Clara, California.

9 II 5. InterTrust is informed and believes, and on that basis alleges, that Defendant

1 0 1 Microsoft is a Washington Corporation with its principal place of business at One Microsoft

1 1 II Way, Redmond, Washington.

! 2 || 6. InterTrust is informed and believes, and on that basis alleges, that Defendant

13 Microsoft does business in this judicial district and has committed and is continuing to commit

14 || acts of infringement in this judicial district.

15 || 7. InterTrust is the owner of United States Patent No. 6,1 85,683 Bl, entitled

16 II "Trusted and secure techniques, systems and methods for item delivery and execution" ("the

17 || '683 patent"), duly and lawfully issued on February 6, 2001. A copy of the '683 patent is

1 8 II attached hereto as Exhibit A.

19 || 8. InterTrust is the owner of United States Patent No. 6,253,1 93 Bl, entitled

20 "Systems and methods for secure transaction management and electronic rights protection" ("the

21 '193 patent"), duly and lawfully issued on June 26, 2001. A copy of the '193 patent is attached

22 II hereto as Exhibit B.

23 II FIRST CLAIM FOR RELIEF

24 J 9. InterTrust hereby incorporates by reference paragraphs 1-7 as if restated herein.

25 || 10. This is a claim for patent infringement under 35 U.S.C. §§271 and 281.

26 || 11. InterTrust is informed and believes, and on that basis alleges, that Microsoft has

27 been and is infringing the '683 patent under § 271(a) by making, using, selling, and offering for

28 sale digital rights management software incorporating inventions claimed in the '683 patent.

271790.01

'FIRST AMENDED COMPLAINT FOR INFRINGEMENT OF U.S. PATENT NOS. 6,185,683 Bl & 6,253,193 Bl

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InterTrust is further informed and believes, and on that basis alleges, that Microsoft's
infringement of the '683 patent under §27 1(a) will continue unless enjoined by this Court.

12. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
been and is knowingly and intentionally inducing others to infringe directly the '683 patent under
§ 271(a), thereby inducing infringement of the '683 patent under § 271(b). InterTrust is further
informed and believes, and on that basis alleges, that Microsoft's infringement of the '683 patent
under §27 1(b) will continue unless enjoined by this Court.

1 3. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
been and is contributorily infringing the '683 patent under § 271(c) by providing digital rights
management software and related functions especially made or especially adapted for infringing
use and not staple articles or commodities of commerce suitable for substantial noninfringing
use. InterTrust is further informed and believes, and on that basis alleges, that Microsoft's
infringement of the '683 patent under §27 1(c) will continue unless enjoined by this Court.

14. InterTrust is informed and believes, and on that basis alleges, that Microsoft is
willfully infringing the '683 patent in the manner described above in paragraphs 1 1 through 13,
and will continue to do so unless enjoined by this Court.

15. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
ierived and received, and will continue to derive and receive from the aforesaid acts of
nfringement gains, profits, and advantages, tangible and intangible, the extent of which are not
jresently known to InterTrust. By reason of the aforesaid acts of infringement, InterTrust has
>een, and will continue to be, irreparably harmed.

SECOND CLAIM FOR RELIEF

1 6. InterTrust hereby incorporates by reference paragraphs 1 -6 and 8 as if restated

lerein.

17. This is a claim for patent infringement under 35 U.S.C. §§ 271 and 281.

1 8. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
ieen and is infringing the '193 patent under § 271(a) by making, using, selling, and offering for
ale digital rights management software incorporating inventions claimed in the '193 patent.

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AMENDED COMPLAINT FOR INFRINGEMENT OF U.S. PATENT NOS. 6,185,683 Bl & 6,253,193 Bl

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InterTrust is further informed and believes, and on that basis alleges, that Microsoft's
infringement of the ' 1 93 patent under §271 (a) will continue unless enjoined by this Court.

1 9. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
been and is knowingly and intentionally inducing others to infringe directly the '193 patent under
§ 271(a), thereby inducing infringement of the '193 patent under § 271(b). InterTrust is further
informed and believes, and on that basis alleges, that Microsoft's infringement of the '193 patent
under §271 (b) will continue unless enjoined by this Court.

20. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
been and is contributory infringing the '193 patent under § 271(c) by providing digital rights
management software and related functions especially made or especially adapted for infringing
use and not staple articles or commodities of commerce suitable for substantial noninfringing
use. InterTrust is further informed and believes, and on that basis alleges, that Microsoft's
infringement of the '193 patent under §271(0 will continue unless enjoined by this Court.

2 1 . InterTrust is informed and believes, and on that basis alleges, that Microsoft is
willfully infringing the '193 patent in the manner described above in paragraphs 1 8 through 20,
and will continue to do so unless enjoined by this Court.

22. InterTrust is informed and believes, and on that basis alleges, that Microsoft has
derived and received, and will continue to derive and receive from the aforesaid acts of
infringement gains, profits, and advantages, tangible and intangible, the extent of which are not
presently known to InterTrust. By reason of the aforesaid acts of infringement, InterTrust has
been, and will continue to be, irreparably harmed.

PRAYER FOR RELIEF
WHEREFORE, InterTrust prays for relief as follows:

A. That Microsoft be adjudged to have infringed the '683 patent under 35 U.S.C. §

271(a);

B. That Microsoft be adjudged to have infringed the '683 patent under 35 U.S.C. §
271(b) by inducing others to infringe directly the '683 patent under 35 U.S.C. § 271(a);

C. That Microsoft be adjudged to have contributor^ infringed the '683 patent under

271790.01

FIRST AMENDED

COMPLAINT FOR INFRING EMENT OF U.S. PATENT NOS. 6,185,683 Hi & 6,253,193 B1

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35U.S.C. § 271(c);

D. That Microsoft be adjudged to have will fully infringed the '683 patent under 35
U.S.C. §§ 271(a), (b), and (c);

E. That Microsoft, its officers, agents, servants, employees and attorneys, and those
persons in active concert or participation with them be preliminarily and permanently restrained
and enjoined under 35 U.S.C. § 283 from directly or indirectly infringing the '683 patent;

F. That Microsoft be adjudged to have infringed the '193 patent under 35 U.S.C. §

271(a);

G. That Microsoft be adjudged to have infringed the ' 1 93 patent under 35 U.S.C. §
271(b) by inducing others to infringe directly the '193 patent under 35 U.S.C. § 271(a);

H. That Microsoft be adjudged to have contributorily infringed the '193 patent under
35 U.S.C. § 271(c);

I. That Microsoft be adjudged to have willfully infringed the ' 1 93 patent under 35
U.S.C. §§ 271(a), (b), and (c);

J. That Microsoft, its officers, agents, servants, employees and attorneys, and those
persons in active concert or participation with them be preliminarily and permanently restrained
and enjoined under 35 U.S.C. § 283 from directly or indirectly infringing the '193 patent;

K. That this Court award damages to compensate InterTrust for Microsoft's
infringement, as well as enhanced damages, pursuant to 35 U.S.C. § 284;

L. That this Court adjudge this case to be exceptional and award reasonable
attorney's fees to InterTrust pursuant to 35 U.S.C. § 285;

M. That this Court assess pre-judgment and post-judgment interest and costs against
Microsoft, and award such interest and costs to InterTrust, pursuant to 35 U.S.C. § 284; and

N. That InterTrust have such other and further relief as the Court may deem proper.
Dated: June 26, 2001 KJEKER & VAN NEST, LLP

By: fHrtWfo

IN W. KEKER
ittimeys for Plaintiff

JERTRUST TECHNOLOGIES
CORPORATION

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FIRST AMENDED COMPLAINT FOR INFRINGEMENT OF U.S. PATENT NOS. 6,185,683 131 & 6,253,193 Bl

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DEMAND FOR JURY TRIAL

Plaintiff InterTrust herby demands a trial by jury as to all issues triable by jury,
specifically including, but not limited to, the issue of infringement of United States Patent No.
6,185,683 Bl and the issue of infringement of United States Patent No. 6,253,193 Bl.

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FIRST AMENDED COMPLAINT FOR INFRINGEMENT OF U.S. PATENT NOS. 6,1 85,683 Bl & 6,253,193 Bl

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PROOF OF SERVICE

I am employed in the City and County of San Francisco, State of California in the office of a
member of the bar of this court at whose direction the following service was made. I am over the
age of eighteen years and not a party to the within action. My business address is Keker & Van
Nest, LLP, 710 Sansome Street, San Francisco, California 9411 1 .

On June 26, 2001, 1 served the following document(s):

FIRST AMENDED COMPLAINT FOR INFRINGEMENT OF
U.S. PATENT NOS. 6,185,683 Bl AND 6,253,193 Bl

DEMAND FOR JURY TRIAL

XX by regular UNITED STATES MAIL by placing a true and correct copy in a sealed envelope addressed as
shown below. I am readily familiar with the practice of Keker & Van Nest, LLP for collection and
processing of correspondence for mailing. According to that practice, items are deposited with the United
States Postal Service at San Francisco, California on that same day with postage thereon fully prepaid. I
am aware that, on motion of the party served, service is presumed invalid if the postal cancellation date or
the postage meter date is more than one day after the date of deposit for mailing stated in this affidavit.

Select by COURIER, by placing a true and correct copy in a sealed envelope addressed as shown below, and

dispatching a messenger from [MESSENGER COMPANY], whose address is [MESSENGER COMPANY
ADDRESS], with instructions to hand-carry the above and make delivery to the following during normal
business hours, by leaving a true copy thereof with the person whose name is shown or the person
authorized to accept courier deliveries on behalf of the addressee.

via Courier

Eric L. Wesenberg, Esq.

Mark R. Weinstein, Esq.

Orrick, Herrington & Sutcliffe LLP

1000 Marsh Road

Menlo Park CA 94025

Fax:650-614-74401

via U.S. Mail

John D. Vandenberg, Esq.

James E. Geringer, Esq.

Klarquist Sparkman Campbell, et al.

One World Trade Center, Suite 1600

121 S.W. Salmon Street

Portland OR 97204

Fax: 503-228-9446

I declare under penalty of perjury under the laws of the State of California that the above is true
and correct.

Executed on June 26, 2001, at San Francisco, California

MARIA LI-MANGIAPA

QkSL..

.01

CASE NO.